SEARCH

Tuesday, May 11, 2010

Tuesday May 11, 2010

REVERSED

1700 Chemical & Materials Engineering Ex Parte Malkin 10/437,078 FRANKLIN 112(1)/103(a) CHRISTENSEN, O'CONNOR, JOHNSON, KINDNESS, PLLC EXAMINER SAVAGE, MATTHEW O 2100 Computer Architecture and SoftwareEx Parte Andrzejak et al 10/418,075 MARTIN 101/102(e) HEWLETT-PACKARD COMPANY EXAMINER CASANOVA, JORGE AAlthough it is possible for claimed subject matter to be patent-ineligible even though it fits within one or more statutory categories under § 101, In re Ferguson, 58 F.3d 1359, 1363 (Fed. Cir. 2009), Ex parte Gutta, 93 USPQ2d 1025, 1034 (BPAI 2009) (precedential), the Examiner has not demonstrated that claims 34-40 recite patent-ineligible subject matter. In Gutta, for example, the Board held that a claim which recites a “machine” or an “article of manufacture” under § 101 nevertheless will be deemed to recite patent-ineligible subject matter under § 101 if the claim “involves a mathematical algorithm” and if the answer to either of the following two questions is “no”:

(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?

(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”

Gutta, 93 USPQ2d at 1031 (footnotes omitted). Because the Examiner has not established that claims 34-40 recite patent-ineligible subject matter even though they recite a machine, we will not sustain the § 101 rejection of any of these claims.